OPPOSITION No B 2 926 023

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830 Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

ZPC Flis Spółka Jawna, Kuranów 12, 96-325 Radziejowice, Poland (applicant), represented by Kancelaria Patentowa "Property" Tomaszewska I Syn, ul. E. Kwiatkowskiego 1 lokal 12, 03-984 Warszawa, Poland (professional representative).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 023 is upheld for all the contested goods.

2. European Union trade mark application No 15 835 309 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 835 309 for the figurative mark . The opposition is based on, inter alia, European trade mark registration No 13 025 036 ‘HAPPY DAY’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration mentioned above.

a) The goods

Among others, the goods on which the opposition is based are the following:

Class 30: Coffee, tea, cocoa and artificial coffee; coffee based drinks; drinking chocolate; cocoa-based beverages; coffee beverages with milk; coffee-based beverages with milk; cappuccino; macchiato; latte-macchiato; iced coffee; rice; tapioca and sago; flour and preparations made from cereals; farinaceous foods; bread, pastry and confectionery; candy; pralines and confectionery; chocolate and chocolate products; edible ices; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); marinades; fruit sauces; tomato sauces; spices; ice; tea drinks; iced tea; tea-based beverages; tea-based beverages with fruit flavouring or fruit flavourings; fruit teas; fruit teas containing lemon and/or flavoured with elderflower; fruit teas containing peach and/or flavoured with honey.

The contested goods are the following:

Class 30: Confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries.

Confectionery, pastries are either identically contained in both lists of goods or they

overlap, and the goods are, therefore identical.

The contested sweetmeats [candy] are included in candy in the earlier mark, and the

goods are, therefore, identical.

The contested wafer biscuits, wafer rolls are included in the broad categories of, or

overlap with, the opponent’s pastry and confectionery. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

Furthermore, the goods can be related to habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

Therefore, the degree of attention when purchasing the relevant goods will vary from

below average to average, depending on the price of the goods and the frequency of

their purchase.

1. The signs

HAPPY DAY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

As seen above, in the case at issue, the goods are everyday products and the public involved is the general public, among which there is a relevant part who does not understand English. The common element ‘HAPPY’ is not meaningful for the non-English-speaking general public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public. Attention must be paid to the fact that the unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign includes a very small element, the word ‘Flis’ under the crown, that can be considered negligible given that it is not noticeable at first sight and, as it is likely to be disregarded by the relevant public, it will not be taken into consideration in the evaluation of this decision.

As regards the earlier mark, given that neither ‘HAPPY’ nor ‘DAY’ will be understood by the public, they are distinctive for the goods at issue. Taking into account that the mark is a word mark, it lacks elements that are more dominant (visually outstanding) than others.

As suggested above, the contested sign is a complex sign in which the element ‘Happy’ dominates the image given its size and central position in the sign.

As seen above, the ‘Happy’ will not be understood and is, therefore, distinctive. On the other hand, the term ‘premium’ will be understood in the relevant territory, because it is often used in commerce to indicate a higher level of quality. Consequently, as the relevant public is used to perceiving this word as a laudatory term indicating that the goods in question are excellent or of a superior quality, its impact is limited (22/05/2012, T60/11, Suisse Premium, EU:T:2012:252, §§ 46, 48 and 49; 14/11/2016, R 1310/2015- 2, Csíki Sör / CIUC PREMIUM et al., § 49 and § 71). Furthermore, referring to the widespread use of the word ‘PREMIUM’, in particular in relation to foodstuffs, to describe the qualities of the goods, the Court explained that this word will also be understood by the non-English-speaking consumers in the European Union (§ 48 and § 49). As for the crown, it is commonly in the market and often it has a laudatory connotation, meaning that the goods are of especially good quality. Also, though distinctive in relation to the goods, the butterfly is not dominant and will be less relevant given its decorative nature.

Taking into account that the only elements of the contested sign that are distinctive are ‘Happy’ and the butterfly, and keeping in mind that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, as the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37), the public is bound to focus on the term ‘Happy’.

Visually, the signs coincide in the term ‘HAPPY’ and differ in the rest of the elements of the contested mark (including colours), and in the second element of the earlier mark ‘DAY’. However, as the common term is at the beginning of the earlier mark and is the most relevant item of the contested mark, where it plays an independent and distinctive role, the degree of visual similarity can be deemed average.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of ‘Happy’ and differs in the pronunciation of ‘DAY’ in the earlier mark and ‘premium’ in the contested mark. Taking that the common term is not only distinctive in the contested mark, but also its most dominant element, the degree of aural similarity can be deemed average.

As mentioned above, conceptually neither the common term ‘HAPPY’ nor ‘DAY’ in the earlier mark has a meaning for the relevant public, whereas ‘premium’ and the figurative elements in the contested mark do. Consequently, in account of these latter items the marks are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

2. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

3. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The public concerned is composed by average consumers and the level of attention varies from low to average. The marks are visually and aurally similar to an average degree and, whereas it is true that they are conceptually not similar, this issue is circumscribed to the presence in the contested mark of a word (‘premium’) and a figurative element (the crown) that are not distinctive in relation to the goods.

Considering all the above, in the presence of identical goods the non-English-speaking part of the public relevant public might think that they originate in the same undertakings or companies with economic ties. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 13 025 036 and the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European trade mark registration No 13 025 036 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Clara IBÁNEZ FIORILLO

María Belén IBARRA DE DIEGO

Orsola LAMBERTI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.